Registered Trade Marks, the ® and ™ symbols and the EU position following Brexit: A synopsis

Trade marks are often accompanied by one of two symbols, being either ® or ™. Brand owners need to be aware of the differences between the two symbols, when to use them and any legal consequences, especially in post-Brexit Britain.

In the UK, the Trade Marks Act 1994 (the “TM Act”) is the primary legislation governing the registration and use of trade marks. Section 1(1) of the TM Act defines a trade mark as ‘any sign which is capable of (a) being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and (b) distinguishing goods or services of one undertaking from those of other undertakings.’ Those who obtain registration are entitled to say so using the term “registered trade mark” or the “®” symbol.

Wishful thinking or protected status?

For those who chose not to register their marks, the “™” symbol is still available. Often, this symbol simply acts as an indication to the public that the brand owner believes that the mark acts as an identifier of its products or services and potentially claims the benefit of certain common law protections for the name, notably the right to sue for passing off. To be clear, the ™ symbol has no legal meaning, and has been described as no more than ‘wishful thinking’.

Conversely, use of the ® symbol and the term “registered” enjoy protected status under the TM Act. Only proprietors (and licensees) of a registered trade mark have the right to display the ® symbol alongside the registered trade mark. The _® symbol acts as a warning to potential infringers and highlights to the wider market that the trade mark owner takes its branding seriously and has taken the trouble to protect its interests by the creation of the property right which is a mark.

Section 95 of the TM Act makes it a criminal offence to make a false representation that a trade mark is registered by using any reference to registration or the _® symbol, or to misrepresent the goods and services for which the mark is registered.

Cross-jurisdictional recognition in the UK

This creates a potential problem where a mark is registered in one jurisdiction, bearing the ® symbol on its packaging, and is then placed on the market within the UK, where the mark may not actually be registered. To deal with that, s. 95(2) of the TM Act provides that the use in the United Kingdom, in relation to a trade mark, of the word “registered” or any other word or symbol importing a reference to registration (i.e. the ® symbol) “shall be deemed to be a representation as to its registration under the TM Act unless it is shown that the reference is to registration elsewhere than in the United Kingdom and that the trade mark is in fact so registered for the goods or services in question”.

These words came to be considered in the case of Second Sight Ltd. v Novell UK Ltd. and Novell Inc. [1995] RPC 423, in which Lightman J (as he then was) held that “the question raised is whether the reference required in order to avoid use of the symbol and word being deemed to constitute a representation of registration in the United Kingdom is some indication on the face of the materials that the registration is elsewhere, or whether it is sufficient that the reference is consistent with registration elsewhere and this registration elsewhere in fact does exist. I am satisfied that the latter is the true construction”.

It is therefore clear that a brand owner with a registered trade mark anywhere in the world may sell products in the UK bearing the ® symbol, without committing the offence.

The EU position – misrepresentations vs the free movement principle

There is also the question as to whether the national law of one EU state in which such restrictions apply, can be used to prevent trade mark owners from exercising the right of free movement of goods and, second, whether such rules form a permissible derogation from the normal principles of free movement of goods and services. This is because the position in the EU is nuanced. In certain EU jurisdictions there are similar rules to those in the UK about the (R) symbol, whilst in others there are not.

In the case of Pall Corp. v P. J. Dahlhausen & Co. (Case C-238/89, December 13, 1990) it was held:

“Article 30 of the EEC Treaty^[1] is to be interpreted as precluding the application of a national provision on unfair competition which enables an economic operator to obtain a prohibition in the territory of a Member State on the marketing of a product bearing the letter (R) in a circle next to the trade mark, if that trade mark is not registered in that State but in another.

In order to justify such a prohibition, it is not possible to rely on the imperative requirements relating to consumer protection, since, assuming that consumers are misled, it can only be as to the place of registration of the trade mark, which is a secondary concern…”

Accordingly, the CJEU explicitly held that the principle of the free movement of goods takes precedence over national regulation regarding unfair competition and/or misleading advertisement in the context of registered trade marks. As the principle of the freedom of goods takes fundamental precedence, the ® symbol used next to a registered trade mark by its proprietor throughout the European Union, so long as the trade mark is registered in one member state of the EU (or indeed, by extension, the EEA).

Following Brexit, trade mark owners may want to consider whether they have a suitable registration in one of the remaining EU member states so that they may rely on the ruling in Pall Corp, and avoid any difficulties in relation to the application of the ® symbol for goods bound for sale in the EEA.

Memery Crystal is helping clients navigate their exposure and liability post-Brexit across a range of IP and commercial issues. Please contact the authors of this article to discuss the topic further.

[1] The Treaty Establishing the European Community has been superseded by the TFEU.

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